Passing Off Cases

Question 1

Maxwell v Hogg (CA)

Answer 1

Magazine launch advertised, defendant’s magazine marketed under same name.
No trade, no goodwill

Question 2

BBC v Talbot Motor Company

Answer 2

“Carfax” for traffic info v spare parts
BBC is entitled to protection of goodwill built up before launch (Allen v Brown)
Significant amount of public know of name as distinctive of BBC’s system

Question 3

My Kinda Bones v Dr Pepper’s Stove Co

Answer 3

“Rib Schack”s - both announced and advertised.
Even if supplier has extensive reputation in similar goods under another name, public will often not have sufficient means of judging nature/quality until seen for themselves

Question 4

Sheraton Motels

Answer 4

Hotel chain did not have any hotels in UK, but showed that goodwill was established in the UK as bookings made through an office in the UK

Question 5

Alain Bernardin v Pavillion Properties

Answer 5

Restaurant in Paris v restaurant in London under same name
Plaintiff had not traded in UK, only some advertising material
Cannot fairly treat as user in the UK. May acquire reputation in some wide sense but not sufficient for passing off action, no goodwill

Question 6

Budvar

Answer 6

“Sporadic and occasional sales” do not amount to carrying on of business in this country.
“The fact is that no ordinary member of the public … could consider himself a customer in this country for the plaintiff’s beer”

Question 7

Starbucks v Sky (Now TV)

Answer 7

Chinese closed-circuit TV availability. Some Chinese-speaking customers in UK aware, accessible online and to airlines
No requirement for trading premises in UK, just need customers in the jurisdiction (but not people who happen to be customers when abroad)
Public interest - could otherwise shut off a mark even with no customers/business and no time/money spent advertising, no intention to do so